Ex Parte Trump et al

Patent Trial and Appeal Board

Dec 17, 2018

13891616 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/891,616 05/10/2013 Martin Trump
112535 7590 12/19/2018
Bose McKinney & Evans LLP
111 Monument Circle
Suite 2700
Indianapolis, IN 46204
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
24603-0010 4822
EXAMINER
ZALESKAS, JOHN M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
12/19/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@boselaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN TRUMP and STEFFEN BOHNE 1
Appeal2018-005043
Application 13/891,616
Technology Center 3700
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
LISA M. GUIJT, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 BorgWarner BERU Systems GmbH is identified as the real party in
interest (Br. 1) and also is the Applicant pursuant to 37 C.F.R. § 1.46.
Appeal2018-005043
Application 13/891,616
CLAIMED SUBJECT MATTER
Claims 1, 15, and 16 are independent. Claim 1 is reproduced below.
1. A method for knock detection in an internal combustion
engine in which a fuel/air mixture is ignited by means of a
corona discharge, the method comprising:
exciting an electrical resonant circuit, in which an
ignition electrode that is electrically insulated with respect to
combustion chamber walls constitutes a capacitor together with
the combustion chamber walls, to generate the corona
discharge; and
measuring and evaluating the course of an electrical
variable of the resonant circuit for knock detection, comprising:
identifying the start of fuel combustion by
detecting a first extremum in the electrical variable;
after the start of fuel combustion, checking for an
increase followed by a decrease or vice versa, in the
electrical variable to identify a local extremum;
checking whether the increase and the decrease
exceed threshold amounts;
not associating extrema falling below the threshold
amounts with knocking; and
associating extrema exceeding the threshold
amounts with knocking.
Br. 25 (Claims App.).
REJECTIONS
Claims 1-16 are rejected as being directed to patent-ineligible subject
matter under the judicial exception to 35 U.S.C. § 101. Final Act. 11; Ans.
2--4.
Claims 1, 2, and 10-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Toedter (US 2011/0305998 Al, pub. Dec. 15, 2011) and
Aoki (US 6,151,954, iss. Nov. 28, 2000). Ans. 5-12, 18.
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Appeal2018-005043
Application 13/891,616
Claims 3-7 and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Toedter, Aoki, and Kiess (US 2003/0164025 Al, pub.
Sept. 4, 2003). Ans. 12-15, 18.
Claims 8 and 9 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Toedter, Aoki, Kiess, and Sho (JP 2011-1267IA, pub. Jan. 20, 2011).
Ans. 15-17, 18.
ANALYSIS
Claims 1-16 Rejected Under 35 USC§ 101
Appellant argues claims 1-16 as a group. Br. 7-13. We select claim
1 as representative with claims 2-16 standing or falling with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that claim 1 is directed to an abstract idea of
measuring, evaluating, identifying, checking, and associating an electrical
variable and does not include any additional elements sufficient to amount to
significantly more than the judicial exception. Final Act. 11. In particular,
the Examiner determines that the claimed steps of measuring and evaluating,
identifying, checking, and associating involve abstract ideas of collecting
information, analyzing the collected information, and determining results
from the analysis of the collected information. Id. at 12-13. The Examiner
also determines that the process steps and corresponding structural features
are recited at a high level of generality for performing generic actions with
generic structures associated with corona discharge applications as taught by
Toedter. Id. at 13; Ans. 21 (citing Toedter ,r,r 2-5). Therefore, the Examiner
determines that the limitations of claim 1, considered individually or as an
ordered combination, do not improve a computer or other technology but
recite what is already known to be conventional in the art. Final Act. 13.
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Appeal2018-005043
Application 13/891,616
We analyze patent-eligibility under Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014) and Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66 (2012). First, we consider whether the
claims are directed to a patent-ineligible concept such as a law of nature,
natural phenomena, or abstract idea. Alice, 134 S. Ct. at 2355. If so, we
consider the claim elements individually and as an ordered combination to
determine whether additional elements transform the claims into a patent-
eligible application. Id. This search for an inventive concept in the second
step seeks an element, or a combination of elements "sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [ineligible concept] itself." Id. We also consider initially whether the
claims fall within a statutory category of section 101. See Aatrix Software,
Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). 2
Alice Step One: Are the Claims Directed to an Abstract Idea?
We agree with the Examiner's determination that claim 1 is directed
to an abstract idea of information processing. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (method of detecting
events on an interconnected electric power grid in real time by receiving
data streams from a grid and power systems, detecting and analyzing events
in real-time, and displaying analysis results, diagnoses, and measurements
involved abstract idea of collecting and analyzing information by steps
people go through in their minds or by mathematical algorithms).
2 Reciting a "method for knock detection in an internal combustion engine"
( emphasis added) does not, by itself, make claim 1 patent eligible. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir.
2011) (regardless of the statutory category a claim invokes, the underlying
invention is considered for patent-eligibility).
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Appeal2018-005043
Application 13/891,616
Reciting a method for detecting knocks in an internal combustion
engine by exciting an electrical resonant circuit does not resolve whether
claim 1 is directed to an abstract idea. See Br. 8-9. Nor does measuring
physical phenomena associated with fuel combustion. See id. at 9-10.
Unlike the situation in Thales Visionix Inc. v. United States, claim 1
recites nothing that is innovative or nonconventional regarding how the
internal combustion engine, electrical resonant circuit, combustion chamber
walls, or electrode are arranged or function. There is nothing unique in the
way that the claimed method measures or evaluates data surrounding the
combustion process. Thales Visionix Inc. v. United States, 850 F.3d 1343,
1348--49 (Fed. Cir. 2017) (holding that the "claims are directed to systems
and methods that use inertial sensors in a non-conventional manner to reduce
errors in measuring the relative position and orientation of a moving object
on a moving reference frame.").
Similarly, in Enfish, LLC v. Microsoft Corporation, the claims were
directed to a non-conventional, self-referential table for a computer database
that functioned differently than conventional databases structures. Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (the claimed
invention achieves benefits over conventional databases, such as increased
flexibility, faster search times, and smaller memory requirements)
Claim 1 recites a method of collecting data in a particular physical
environment that is conventional and then analyzing the data to predict if a
particular event (knocking) has occurred. Merely presenting the results of
an abstract process of collecting and analyzing information without more is
abstract as an ancillary part of the collection and analysis. Elec. Power, 830
F.3d at 1354.
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Appeal2018-005043
Application 13/891,616
Essentially, Appellant recognized a physical phenomenon. With an
ideal fuel combustion, "the rise in the resonance frequency is continuous
monotonously until the end of the corona discharge." Spec. ,r 13. However,
"[ w ]ith a knocking combustion, this rise in resonance frequency is
interrupted by an explosion-like partial combustion, which leads to a fall in
the frequency." Id. The claimed method looks for these interruptions as
"extremum," which present themselves as an increase followed by a
decrease or vice versa. See id. ,r,r 5, 29, Figs. le, 2c; Br. 25 (Claims App.).
The claimed method thus measures and evaluates electrical variables
to identify a local extremum. Appellant has not identified anything about
the electrical resonant circuit, combustion chamber walls, or the ignition
electrode that is unconventional or innovative, either in their configuration
or their use in the claimed method that would elevate the method out of the
realm of the abstract under step one of Alice. See Br. 8-13.
Unlike the situation in Thales and Enfzsh, claim 1 does not require
anything other than conventional elements that gather and analyze data.
See Elec. Power, 830 F.3d at 1355; Automated Tracking Solutions, LLC v.
Coca-Cola Co., 723 F. App'x 989,994 (Fed. Cir. 2018) (non-precedential)
( claims to a system for locating, identifying and/or tracking an object with a
first transponder, a reader, a processor, and a storage device "simply do not
require a particular configuration or arrangement of RFID system
components. Nor do the representative claims require multiple antenna
coverage areas."); TDE Petroleum Data Solutions, Inc. v. AKM Enterprise,
Inc., 657 F. App'x 991, 993 (Fed. Cir. 2016) (non-precedential) (claims to
method for determining the state of well operations by receiving data from
plural systems and comparing them to threshold limits was an abstract idea).
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Appeal2018-005043
Application 13/891,616
Alice Step Two: Do the Claims Contain an "Inventive Concept"?
We also agree with the Examiner that claim 1 does not recite any
additional elements that are sufficient to elevate the abstract idea of data
collection and analysis to a patent-eligible application. Final Act. 2-3; Ans.
7-8. Instead, the claimed method merely detects/collects/measures data
relating to an internal engine combustion and analyzes that information.
Appellant admits that knock detection for internal combustion engines
that ignite a fuel/air mixture by a corona discharge is known as is a corona
ignition device. Spec. ,r,r 2, 3. Appellant does not describe their claimed
electrical resonant circuit, ignition electrode, or combustion chamber walls
as innovations in internal combustion engines. Nor does claim 1 recite any
innovative ways to detect, measure, or evaluate electrical variables in an
internal combustion engine. Br. 2 (Summary of Claimed Subject Matter for
claim 1) (citing Spec. ,r,r 2, 3, 7, 35, 36, 38 as support for claim 1). The
Examiner correctly finds that Appellant and prior art such as Toedter teach
such internal combustion engines and systems as conventional. See Ans. 21.
We also agree with the Examiner that claim 1 is distinguishable from
claims found to be patent eligible in Diamond v. Diehr, 450 U.S. 17 5 (1981)
because claim 1 does not recite a process that effects any transformation or
reduction of a particular article to a different state or thing. Ans. 21-22; see
Diamond, 450 U.S. at 192 ("when a claim containing a mathematical
formula implements or applies that formula in a structure or process which,
when considered as a whole, is performing a function which the patent laws
were designed to protect ( e. g., transforming or reducing an article to a
different state or thing), then the claim satisfies the requirements of§ 101.").
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Appeal2018-005043
Application 13/891,616
[M]ere recitation of concrete, tangible components is
insufficient to confer patent eligibility to an otherwise abstract
idea. Rather, the components must involve more than
performance of well-understood, routine, conventional
activit[ies] previously known to the industry.
In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016)
( citing Alice, 134 S. Ct. at 2359 (internal quotations omitted).
Whether considered individually, or as an ordered combination, the
limitations of claim 1 do not recite an inventive concept. Instead, they use
conventional components in a conventional combination or arrangement to
collect and analyze data, which is an abstract idea. See Elec. Power, 830
F.3d at 1356 ("The claims in this case specify what information in the
power-grid field it is desirable to gather, analyze, and display, including in
"real time"; but they do not include any requirement for performing the
claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology."); TL! Commc 'ns,
823 F.3d at 611-13 ("the focus of the patentee and of the claims was not on
an improved telephone unit or an improved server" but rather recite physical
components that merely provide a generic environment in which to carry out
an abstract idea); Automated Tracking, 723 F. App'x at 995 (The claims do
not use conventional RFID components in a non-conventional combination
or arrangement. "Instead, the claims merely disclose collecting data from a
particular source-RFID transponders-and analyzing that data.").
Thus, we are not persuaded by Appellant's arguments that claim 1
represents an inventive concept simply because the method is practiced in a
specific field. Br. 13-14. Nor does claim 1 represent a specific solution to a
specific problem of knock detection. Id. at 13.
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Appeal2018-005043
Application 13/891,616
Unlike the mathematical formula used to improve a process for curing
of rubber in Diehr, claim 1 recites a method that gathers, processes, and
analyzes data, which is an abstract idea. At most, the claimed method may
identify knocking based on the claimed data gathering and analysis. There is
no evidence that claim 1 recites a method that solves the problem of knock
detection as Appellant argues. Br. 13. Nor is there evidence that claim 1
recites a better method of detecting knocks in an internal combustion engine.
This is particularly true given the generality that claim 1 recites its
method. Extrema are identified for an electrical variable, which can be a
resonance frequency or impedance of the resonant circuit or the phase
position between current and voltage. Spec. ,r 6. Appellant discloses that
knocking combustion leads specifically to vibrations of the combustion
chamber contents in the acoustic frequency range and these oscillations are
found in the electrical variables of the resonant circuit. Id. ,r 7. There is no
indication that identifying a single local extremum improves knock detection
over combustion chamber vibrations. Appellant discloses that knocking is
detected by third and fourth local extrema, and the differences between two
or more extrema must be calculated to determine the extent of the knocking.
Id. ,r,r 13, 17. Even if inventive, these features are not recited in claim 1.
Appellant' arguments regarding preemption (Br. 14) are resolved by
our§ 101 analysis. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); see also Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (where patent
claims are deemed patent ineligible, "preemption concerns are fully
addressed and made moot").
For all the foregoing reasons, we sustain the rejection of claims 1-16.
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Appeal2018-005043
Application 13/891,616
Claims 1, 2, and 10-15
Rejected As Unpatentable over Toedter and Aoki
Appellant argues claims 1, 2, and 10-15 as a group. Br. 15-21. We
select claim 1 as representative with claims 2 and 10-15 standing or falling
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The main issue in dispute is whether Toedter and/or Aoki teach or
suggest "checking for an increase followed by a decrease or vice versa, in
the electrical variable to identify a local extremum" and "associating
extrema exceeding the threshold amounts with knocking." See Br. 15-21.
We agree with Appellant that Toedter's disclosure of measuring an
electrical variable and comparing the measured values to limit values to
identify values exceeding or falling below the limit values to determine the
impact on combustion chamber performance does not necessarily disclose
the claimed local extremum, which requires an increase followed by a
decrease and vice versa. See id. at 15-17.
We agree with the Examiner that Aoki cures Toedter's deficiencies in
this regard by measuring electrical variable signals using a peak holding unit
to determine whether a knocking signal exceeds a threshold. See Ans. 8-9.
Appellant does not dispute this finding; instead, Appellant argues that a peak
holding unit merely records a peak value of the measured signal rather than
determining whether a local extremum is present because an integrating unit
accumulates an input quantity. Br. 19-20.
In response, the Examiner cites Figure 4B of Aoki as evidence of the
measurement and recognition of local extremum. Ans. 34. Figure 4B shows
the output of a band-pass filter BFP with knocking vibrations as a series of
extremum, i.e., increases followed by decreases and vice versa similar to
Figures le and 2c of Appellant's disclosure. Spec. ,r 29.
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Application 13/891,616
Appellant's arguments do not address these findings of the Examiner
and, therefore, do not apprise us of Examiner error in this regard. See Br.
18-20. Aoki also illustrates the prior art understanding that a "peak" is
given its ordinary, customary meaning of a maximum point, i.e., an increase
followed by a decrease, which corresponds to the claimed extrema. Aoki
measures ionic current as an electrical variable to detect knocking. 3 Aoki,
5:26-45. Like Appellant (Spec. ,r 8), Aoki filters measured signals. Aoki,
5:28--45. Like Appellant (Spec. ,r 9), Aoki also integrates the signals. Aoki,
5:28--45. Aoki compares measured signal peaks to threshold amounts to
determine whether knocking has occurred as claimed. 4 Id. at 6: 19-58; Br.
20 (peak value is compared to a threshold).
Accordingly, we sustain the rejection of claims 1, 2, and 10-15.
Claims 3-7 and 16
Rejected As Unpatentable over Toedter, Aoki, and Kiess
Appellant argues the patentability of dependent claims 3-7 and
independent claim 16 for the same reasons discussed for claim 1. Br. 21-22.
Because we sustain the rejection of claim 1, these arguments are not
persuasive and we also sustain the rejection of claims 3-7 and 16.
Claims 8 and 9
Rejected As Unpatentable Over Toedter, Aoki, Kiess, and Sho
Appellant argues patentability of claims 8 and 9 because they depend
from claim 1. Br. 22. Because we sustain the rejection of claim 1, this
argument is not persuasive and we sustain the rejection of claims 8 and 9.
3 Appellant discloses current as an exemplary electrical variable. Spec. ,r 6.
4 Although claim 1 recites checking whether an increase or decrease exceeds
threshold amounts, the Specification discloses the use of thresholds only for
filtering. Spec. ,r,r 32, 34. The Specification also discloses that detection of
knocking generally involves the detection of multiple extrema. Id. ,r,r 35-39.
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Application 13/891,616
DECISION
We affirm the rejection of claims 1-16 as directed to patent-ineligible
subject matter under the judicial exception to 35 U.S.C. § 101.
We affirm the prior art rejections of claims 1-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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